DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claims 3 and 4, the claims require the addition of a fermentation starter in step (ii) of Claim 1; however, step (ii) of Claim 1 requires subjecting the mixture of step (i) to fermentation or heat treatment. It is not clear whether Claims 3 and 4 mean to require fermentation to occur within step (ii), or if the claims are meant to further limit only the fermentation alternative. It is not clear whether fermentation starter is required to be added in the case where only heat treatment is performed in step (ii). For purposes of examination, the Examiner will interpret the claim as only requiring the addition of a fermentation starter as positively recited by the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5-6, 9-10, 14-16, 18-20, 22, 28-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (Repurposing of Fruit Peel as a Green Reductant for Recycling of Spent Lithium-Ion Batteries, Environmental Science and Technology, 2020), hereinafter ‘Wu’.
Regarding Claim 1, Wu discloses a method of obtaining metal ions from a battery (Title), the method comprising:
(i) adding fruit to a solvent to form a mixture (In Situ Precipitation of Metal Hydroxides: 1 g of orange peel is added to a citric acid solution and allowed to react for 4 hours);
(ii) subjecting the mixture of step (i) to fermentation or heat treatment to obtain a leaching solution (In Situ Precipitation of Metal Hydroxides: the solution of orange peel is allowed to react for 4 hours at 100 °C, and is considered heat treated); and
(iii) adding a crushed battery to the leaching solution thereby obtaining a leachate comprising metal ions (In Situ Precipitation of Metal Hydroxides: the orange peel is added along with 5 g of black mass, which is crushed lithium ion battery material).
Regarding Claim 5, Wu discloses heating the mixture at a temperature from about 60° C. to about 220° C (In Situ Precipitation of Metal Hydroxides: the leaching solution is allowed to react for 4 hours at 100 °C).
Regarding Claim 6, Wu discloses the duration of heat treatment is in the range of about 2 hours to about 80 hours (In Situ Precipitation of Metal Hydroxides: the leaching solution is allowed to react for 4 hours).
Regarding Claim 9, Wu discloses (iia) before step (iii), adding an acid to the leaching solution of step (ii) to obtain an acidified leaching solution, and adding the crushed battery to the acidified leaching solution thereby obtaining a leachate comprising metal ions (In Situ Precipitation of Metal Hydroxides: black mass and orange peel are added to a citric acid solution, said solution is thereby considered an acidified leaching solution).
Regarding Claim 10, Wu discloses the use of citric acid as discussed above.
Regarding Claim 14 and 28, Wu discloses the density of the crushed battery in the leaching solution or acidified leaching solution is in the range of about 1 g/L to about 100 g/L (In Situ Precipitation of Metal Hydroxides: 5 g of black mass is added to 100 mL of solution – this corresponds to a slurry density of 50 g/L).
Regarding Claim 15, Wu discloses the fruit is orange peel, as discussed above.
Regarding Claim 16, Wu discloses the fruit is orange peel, as discussed above.
Regarding Claim 18, Wu discloses leaching of lithium and cobalt (In Situ Precipitation of Metal Hydroxides).
Regarding Claim 19, Wu discloses a method of obtaining a metal salt from a battery (Title), the method comprising:
(i) adding fruit to a solvent to form a mixture (In Situ Precipitation of Metal Hydroxides: 1 g of orange peel is added to a citric acid solution and allowed to react for 4 hours);
(ii) subjecting the mixture of step (i) to fermentation or heat treatment to obtain a leaching solution (In Situ Precipitation of Metal Hydroxides: the solution of orange peel is allowed to react for 4 hours at 100 °C, and is considered heat treated); and
(iii) adding a crushed battery to the leaching solution thereby obtaining a leachate comprising metal ions (In Situ Precipitation of Metal Hydroxides: the orange peel is added along with 5 g of black mass, which is crushed lithium ion battery material); and
(iv) adding a precipitating agent to the leachate to obtain a precipitate comprising the metal salt (In Situ Precipitation of Metal Hydroxides: sodium hydroxide is added to precipitate cobalt hydroxide).
Regarding Claim 20, Wu discloses the precipitating agent is sodium hydroxide, as discussed above.
Regarding Claim 22 and 29, Wu discloses the battery is a metal ion battery (Preprocessing of Spent LIBs).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (Repurposing of Fruit Peel as a Green Reductant for Recycling of Spent Lithium-Ion Batteries, Environmental Science and Technology, 2020), in view of Nayaka et al. (Effective and environmentally friendly recycling process designed for LiCoO2 cathode powders of spent Li-ion batteries using mixture of mild organic acids, Waste Management, 2018).
Regarding Claim 2, while Wu discloses leaching of LiCoO2 batteries with a combination of organic acids and orange peel as discussed above, Wu does not disclose that the pH of the leaching solution is about 3 to about 5.
Nayaka discloses leaching of spent LiCoO2 batteries using organic acids including citric acid, tartaric acid (TA), and ascorbic acid (2. Experimental). A person of ordinary skill in the art would have recognized Nayaka as analogous to Wu, as both references are drawn to the same field of endeavor as the claimed invention, leaching of LiCoO2 battery materials in organic acids - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Nayaka discloses the pH of the utilized leaching solution is 3 prior to leaching (2. Experimental), and such a leaching solution results in effective leaching of Co and Li from the spent battery materials (3.2. Dissolution with mixture of citric acid, tartaric acid and ascorbic acid), and at the end of complete dissolution, recovery of cobalt oxalate was successful by the addition of oxalic acid (3.4. Recovery of cobalt as cobalt oxalate).
In light of this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to perform leaching as disclosed by Wu using a leaching solution having a pH of 3 as disclosed by Nayaka. Such a pH has been shown to effectively result in dissolution of lithium and cobalt from spend LiCoO2 solutions, such that the use of such a solution would have been predictable to one having ordinary skill in the art. Such a pH is within the instantly claimed range.
Claim(s) 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (Repurposing of Fruit Peel as a Green Reductant for Recycling of Spent Lithium-Ion Batteries, Environmental Science and Technology, 2020), in view of Park et al. (High-Yield One-Pot Recovery and Characterization of Nanostructured Cobalt Oxalate from Spent Lithium-Ion Batteries and Successive Re-Synthesis of LiCoO2, Metals, 2017), hereinafter ‘Park’.
Regarding Claim 25, Wu discloses a method of obtaining a metal salt from a battery (Title), the method comprising:
(i) adding fruit to a solvent to form a mixture (In Situ Precipitation of Metal Hydroxides: 1 g of orange peel is added to a citric acid solution and allowed to react for 4 hours);
(ii) subjecting the mixture of step (i) to fermentation or heat treatment to obtain a leaching solution (In Situ Precipitation of Metal Hydroxides: the solution of orange peel is allowed to react for 4 hours at 100 °C, and is considered heat treated); and
(iii) adding a crushed battery to the leaching solution thereby obtaining a leachate comprising metal ions (In Situ Precipitation of Metal Hydroxides: the orange peel is added along with 5 g of black mass, which is crushed lithium ion battery material); and
(iv) adding a precipitating agent to the leachate to obtain a precipitate comprising the metal salt (In Situ Precipitation of Metal Hydroxides: sodium hydroxide is added to precipitate cobalt hydroxide).
Further regarding Claim 1, while the process of Wu as modified above produces a leachate solution as claimed, and further discloses precipitation of solids to generate a precipitate, Wu does not disclose a step of mixing the precipitate of step (iv) with a lithium salt and heating the resulting mixture to obtain a lithium cathode material.
Park discloses a method of resynthesizing lithium cobalt oxide from a recovered lithium filtrate (Abstract). A person of ordinary skill in the art would have recognized Park as analogous to Wu, as both references are drawn to the same field of endeavor as the claimed invention, the recovery and reuse of lithium materials from lithium ion batteries - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Particularly, Park discloses re-synthesizing lithium cobalt oxide as a cathode material by adding oxalic acid to a lithium cobalt battery leachate, resulting in precipitated cobalt oxalate precipitate, and that by the addition of lithium hydroxide and lithium carbonate (LiOH and Li2CO3), and after calcining the resulting mixture between 400 and 900 °C, LiCoO2 cathode material was synthesized (Section 3.2; see also Eq. (2) and synthesis description).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the process of Wu by mixing the resulting precipitate from the addition of oxalic acid with a lithium salt such as lithium hydroxide and/or lithium carbonate and heating the mixture to obtain a lithium cathode material (i.e., lithium cobalt oxide) capable of use in a lithium ion battery, because Park expressly teaches that such transition-metal salt precipitates are suitable precursors for regeneration of lithium cathode materials by lithiation and calcination, and the combined references are all directed to recycling and reuse of spent lithium ion battery cathode materials.
Regarding Claim 26, Wu as modified above suggests the use of lithium hydroxide and/or lithium carbonate as the lithium salt, as discussed above.
Regarding Claim 27, Wu as modified above suggests the lithium cathode material is lithium cobalt oxide (LCO), as discussed above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 9-10, 14-16, 18-20, 22, 25-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 3, 5-24 of copending Application No. 17371191 in view of Park.
This is a provisional nonstatutory double patenting rejection.
The ’191 application claims methods of obtaining metals from a battery by adding fruit to a solvent to form a mixture; subjecting the mixture to heat treatment (80°C), then adding a crushed battery to the resulting solution to obtain a leachate comprising metal ions (Claim 1.)
The ’191 application claims adding an acid to the leaching solution. (Claim 1).
The ’191 application claims a subsequent step of adding a precipitating agent to the leachate to obtain a precipitate containing the metal salt (Claim 12).
The ‘191 application claims the organic acid is citric acid (Claim 21).
The ‘191 application claims a density of the leaching solution of 5 to 50 g/L (Claim 11).
The ‘191 application claims the use of a large number of the same fruits claimed by the instant application (Claim 4).
The ‘191 application claims the use of fruit peel (Claim 1).
The ‘191 application claims leaching a metal ion battery (Claim 18).
The ‘191 application claims the use of a large number of the same precipitating agents claimed by the instant application (Claim 14).
The ‘191 application claims adding a lithium salt to the precipitate (Claim 18-19).
Allowable Subject Matter
Claims 3-4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art neither discloses nor reasonably suggests the limitations of Claims 3-4, requiring the addition of a fermentation starter to the mixture. While the prior art does present the use of fruit peels in obtaining metal ions from a battery, there exists no suggestion or motivation in the prior art to subject such materials to fermentation as claimed.
Conclusion
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/L.E.L./ Examiner, Art Unit 1738
/ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736
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